I/P Engine, Inc. v. AOL, Inc. et al

Filing
693

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
Civil Action No. 2:11-cv-512
v.
AOL, INC., et al.,
Defendants.
DEFENDANTS’ PROPOSED POST-TRIAL JURY INSTRUCTIONS
Defendants Google, Inc., AOL Inc., IAC Search & Media, Inc., Gannett Co., Inc., and
Target Corp. (“Defendants”) propose the following post-trial jury instructions. Defendants’
proposed post-trial jury instructions are made without waiver of Defendants’ pending motions,
which if granted, may render portions of the following instructions unnecessary. Defendants
further reserve the right to amend, supplement, or modify these post-trial instructions in light of
further developments, including any remaining fact or expert discovery, and based on the
evidence and arguments presented at trial. Defendants expect that the parties will meet and
confer to refine the post-trial jury instructions as events continue to narrow the issues.
01980.51928/4989241.4
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1.
FINAL INSTRUCTIONS - GENERAL1
MEMBERS OF THE JURY, NOW THAT YOU HAVE HEARD ALL THE EVIDENCE
AND THE ARGUMENTS OF THE ATTORNEYS, IT IS MY DUTY TO INSTRUCT YOU
ON THE LAW WHICH APPLIES TO THIS CASE. IT IS YOUR DUTY TO FIND THE
FACTS FROM ALL THE EVIDENCE IN THE CASE. TO THOSE FACTS, YOU WILL
APPLY THE LAW AS I GIVE IT TO YOU. YOU MUST NOT READ INTO THESE
INSTRUCTIONS, OR INTO ANYTHING THE COURT MAY HAVE SAID OR DONE, ANY
SUGGESTION AS TO WHAT VERDICT YOU SHOULD RETURN – THAT IS A MATTER
ENTIRELY UP TO YOU. YOU ARE INSTRUCTED THAT ALL PERSONS, INCLUDING
THE PLAINTIFF AND DEFENDANTS IN THIS CASE, STAND EQUAL BEFORE THE
LAW, AND ARE TO BE DEALT WITH AS EQUALS IN THIS COURT.
1
Defendants’ proposed instructions are adapted from the Model Patent Jury Instructions
prepared by the Federal Circuit Bar Association (Feb. 2012), 2006 Fifth Circuit Civil Pattern
Jury Instructions (available at http://www.lb5.uscourts.gov/juryinstructions/), Third Circuit
Model Civil Jury Instructions (available at
http://www.ca3.uscourts.gov/civiljuryinstructions/toc_and_instructions.htm), the jury
instructions from Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.),
and cited federal case law.
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1.1
EVIDENCE IN THE CASE2
YOU ARE TO CONSIDER ONLY THE EVIDENCE IN THE CASE. IN YOUR
CONSIDERATION OF THE EVIDENCE, HOWEVER, YOU ARE NOT LIMITED ONLY TO
THE STATEMENTS OF THE WITNESSES. IN OTHER WORDS, YOU ARE NOT LIMITED
SOLELY TO WHAT YOU SEE AND HEAR AS THE WITNESSES TESTIFIED. YOU ARE
PERMITTED TO DRAW FROM THE FACTS WHICH HAVE BEEN PROVED SUCH
REASONABLE INFERENCES AS YOU FEEL ARE JUSTIFIED IN LIGHT OF
EXPERIENCE.
2
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
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1.2
STIPULATED FACTS3
BEFORE THE TRIAL OF THIS CASE THE COURT HELD A CONFERENCE WITH
THE ATTORNEYS FOR ALL THE PARTIES. AT THIS CONFERENCE THE PARTIES
ENTERED INTO CERTAIN STIPULATIONS OR AGREEMENTS IN WHICH THEY
AGREED THAT FACTS COULD BE TAKEN AS TRUE WITHOUT ANY FURTHER
PROOF. BY THIS PROCEDURE IT IS OFTEN POSSIBLE TO SAVE TIME.
I WILL NOW READ THE STIPULATED FACTS:
[STIPULATED FACTS]
3
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
Defendants request that the Court read the stipulated facts into the record.
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1.3
INFERENCES4
YOU MUST CONSIDER ONLY THE EVIDENCE IN THIS CASE. HOWEVER, YOU
MAY DRAW SUCH REASONABLE INFERENCES FROM THE TESTIMONY AND
EXHIBITS AS YOU FEEL ARE JUSTIFIED IN THE LIGHT OF COMMON EXPERIENCE.
YOU MAY MAKE DEDUCTIONS AND REACH CONCLUSIONS THAT REASON AND
COMMON SENSE LEAD YOU TO MAKE FROM THE TESTIMONY AND EVIDENCE.
THE TESTIMONY OF A SINGLE WITNESS MAY BE SUFFICIENT TO PROVE
ANY FACT, EVEN IF A GREATER NUMBER OF WITNESSES MAY HAVE TESTIFIED
TO THE CONTRARY, IF AFTER CONSIDERING ALL THE OTHER EVIDENCE YOU
BELIEVE THAT SINGLE WITNESS.
YOU MAY ALSO CONSIDER EITHER DIRECT OR CIRCUMSTANTIAL
EVIDENCE. DIRECT EVIDENCE IS A DOCUMENT OR THE TESTIMONY OF ONE WHO
ASSERTS ACTUAL KNOWLEDGE OF FACTS, SUCH AS AN EYEWITNESS. THE
OTHER IS INDIRECT OR CIRCUMSTANTIAL EVIDENCE—THE PROOF OF
CIRCUMSTANCES THAT TEND TO PROVE OR DISPROVE THE EXISTENCE OR
NONEXISTENCE OF CERTAIN OTHER FACTS. THE LAW MAKES NO DISTINCTION
THE WEIGHT TO BE GIVEN TO EITHER DIRECT OR CIRCUMSTANTIAL EVIDENCE.
4
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.); 2006
Fifth Circuit Civil Pattern Jury Instructions.
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1.4
PREPONDERANCE OF THE EVIDENCE5
THIS IS A CIVIL CASE. I/P ENGINE IS THE PARTY THAT BROUGHT THIS
LAWSUIT. GOOGLE, AOL, IAC, TARGET, AND GANNETT ARE THE PARTIES
AGAINST WHICH THE LAWSUIT WAS FILED. I/P ENGINE HAS THE BURDEN OF
PROVING THAT THE DEFENDANTS INFRINGE ITS PATENTS BY WHAT IS CALLED
THE PREPONDERANCE OF THE EVIDENCE. THAT MEANS I/P ENGINE HAS TO
PROVE TO YOU, IN LIGHT OF ALL THE EVIDENCE, THAT WHAT IT CLAIMS IS
MORE LIKELY SO THAN NOT SO. TO SAY IT DIFFERENTLY: IF YOU WERE TO PUT
THE EVIDENCE FAVORABLE TO I/P ENGINE AND THE EVIDENCE FAVORABLE TO
DEFENDANTS ON OPPOSITE SIDES OF THE SCALES, I/P ENGINE WOULD HAVE TO
MAKE THE SCALES TIP ON ITS SIDE. IF I/P ENGINE FAILS TO MEET THIS BURDEN,
THE VERDICT MUST BE FOR DEFENDANTS. IF YOU FIND AFTER CONSIDERING
ALL THE EVIDENCE THAT A CLAIM OR FACT IS MORE LIKELY SO THAN NOT SO,
THEN THE CLAIM OR FACT HAS BEEN PROVED BY A PREPONDERANCE OF THE
EVIDENCE. IF THE PROOF FAILS TO ESTABLISH ANY ESSENTIAL PART OF I/P
ENGINE’S INFRINGEMENT CLAIM BY A PREPONDERANCE OF THE EVIDENCE, YOU
SHOULD FIND FOR DEFENDANTS AS TO THAT CLAIM.
I/P ENGINE ALSO HAS THE BURDEN OF PROVING ENTITLEMENT TO
DAMAGES BY A PREPONDERANCE OF THE EVIDENCE.
IN DETERMINING WHETHER ANY FACT HAS BEEN PROVED BY A
PREPONDERANCE OF EVIDENCE IN THE CASE, YOU MAY, UNLESS OTHERWISE
INSTRUCTED, CONSIDER THE TESTIMONY OF ALL WITNESSES, REGARDLESS OF
5
Third Circuit Model Civil Jury Instructions.
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WHO MAY HAVE CALLED THEM, AND ALL EXHIBITS RECEIVED IN EVIDENCE,
REGARDLESS OF WHO MAY HAVE PRODUCED THEM.
YOU MAY HAVE HEARD OF THE TERM PROOF BEYOND A REASONABLE
DOUBT. THAT IS A STRICTER STANDARD OF PROOF AND IT APPLIES ONLY TO
CRIMINAL CASES. IT DOES NOT APPLY IN CIVIL CASES SUCH AS THIS. SO YOU
SHOULD PUT IT OUT OF YOUR MIND.
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1.5
CLEAR AND CONVINCING EVIDENCE6
CLEAR AND CONVINCING EVIDENCE IS EVIDENCE THAT PRODUCES IN
YOUR MIND A FIRM BELIEF OR CONVICTION THAT THE ALLEGATIONS SOUGHT
TO BE PROVED BY THE EVIDENCE ARE TRUE. CLEAR AND CONVINCING
EVIDENCE INVOLVES A HIGHER DEGREE OF PERSUASION THAN IS NECESSARY
TO MEET THE PREPONDERANCE OF THE EVIDENCE STANDARD. BUT IT DOES
NOT REQUIRE PROOF BEYOND A REASONABLE DOUBT, THE STANDARD APPLIED
IN CRIMINAL CASES.
6
Third Circuit Model Civil Jury Instructions.
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1.6
CREDIBILITY OF WITNESSES7
YOU, AS JURORS, ARE THE SOLE JUDGES OF THE CREDIBILITY OF THE
WITNESSES AND THE WEIGHT THEIR TESTIMONY DESERVES. YOU MAY BE
GUIDED BY THE APPEARANCE AND THE CONDUCT OF THE WITNESS, OR BY THE
MANNER IN WHICH THE WITNESSES TESTIFY, OR BY THE CHARACTER OF THE
TESTIMONY GIVEN, OR BY EVIDENCE TO THE CONTRARY OF THE TESTIMONY
GIVEN. YOU SHOULD CAREFULLY SCRUTINIZE ALL THE TESTIMONY GIVEN, THE
CIRCUMSTANCES UNDER WHICH EACH WITNESS HAS TESTIFIED, AND EVERY
MATTER IN EVIDENCE WHICH TENDS TO SHOW WHETHER THE WITNESS WAS
WORTHY OF BELIEF. CONSIDER EACH WITNESS'S INTELLIGENCE, MOTIVE AND
STATE OF MIND, THEIR DEMEANOR OR MANNER WHILE ON THE STAND.
CONSIDER THE WITNESS'S ABILITY TO OBSERVE THE MATTERS AS TO WHICH HE
OR SHE HAS TESTIFIED, AND WHETHER HE OR SHE IMPRESSES YOU AS HAVING
AN ACCURATE RECOLLECTION OF THESE MATTERS. CONSIDER ALSO ANY
RELATION EACH WITNESS MAY BEAR TO EITHER SIDE OF THE CASE; THE
MANNER IN WHICH EACH WITNESS MIGHT BE AFFECTED BY THE JURY; AND THE
EXTENT TO WHICH, IF AT ALL, EACH WITNESS IS EITHER SUPPORTED OR
CONTRADICTED BY OTHER EVIDENCE IN THE CASE.
INCONSISTENCIES OR DISCREPANCIES IN THE TESTIMONY OF A WITNESS,
OR BETWEEN THE TESTIMONY OF DIFFERENT WITNESSES, MAY OR MAY NOT
CAUSE YOU, AS A JUROR, TO DISCREDIT SUCH TESTIMONY. TWO OR MORE
PERSONS WITNESSING AN INCIDENT OR TRANSACTION MAY SEE IT OR HEAR IT
7
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
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DIFFERENTLY. AN INNOCENT MISRECOLLECTION, LIKE A FAILURE OF
RECOLLECTION, IS NOT AN UNCOMMON EXPERIENCE. IN WEIGHING THE EFFECT
OF A DISCREPANCY, ALWAYS CONSIDER WHETHER IT PERTAINS TO A MATTER
OF IMPORTANCE OR AN UNIMPORTANT DETAIL AND WHETHER THE
DISCREPANCY RESULTS FROM INNOCENT ERROR OR INTENTIONAL FALSEHOOD.
AFTER MAKING YOUR OWN JUDGMENT, LADIES AND GENTLEMEN, YOU
ARE TO GIVE THE TESTIMONY OF EACH WITNESS SUCH WEIGHT, IF ANY, AS YOU
THINK IT DESERVES. YOU MAY, IN SHORT, ACCEPT OR REJECT THE TESTIMONY
OF ANY WITNESS IN WHOLE OR IN PART.
ALSO, THE WEIGHT OF THE EVIDENCE IS NOT NECESSARILY DETERMINED,
AGAIN, BY THE NUMBER OF WITNESSES TESTIFYING TO THE EXISTENCE OR THE
NONEXISTENCE OF ANY FACT. YOU MAY FIND THAT THE TESTIMONY OF A
SMALL NUMBER OF WITNESSES AS TO ANY FACT IS MORE CREDIBLE THAN THE
TESTIMONY OF A LARGER NUMBER OF WITNESSES TO THE CONTRARY.
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1.7
EXPERT WITNESSES8
WE HAD A NUMBER OF EXPERT WITNESSES IN THIS CASE. WITNESSES
WHO, BY EDUCATION OR EXPERIENCE, HAVE BECOME EXPERTS IN SOME ART OR
SCIENCE OR PROFESSION OR CALLING, MAY STATE AN OPINION AS TO
RELEVANT AND MATERIAL MATTER, AS TO WHICH THEY POSSESS EXPERTISE,
AND MAY ALSO STATE THEIR REASONS FOR THEIR OPINION.
OPINION TESTIMONY BY QUALIFIED EXPERT WITNESSES IS COMPETENT
EVIDENCE. YOU SHOULD CONSIDER EACH EXPERT OPINION RECEIVED IN
EVIDENCE IN THIS CASE AND GIVE EACH SUCH OPINION THE WEIGHT YOU FIND
IT DESERVES. IF YOU SHOULD DECIDE THAT THE OPINION OF AN EXPERT
WITNESS OR HIS OR HER QUALIFICATIONS ARE NOT SUPPORTED BY SUFFICIENT
EDUCATION OR EXPERIENCE, OR IF YOU SHOULD CONCLUDE THAT THE
REASONS GIVEN IN SUPPORT OF THE OPINION ARE NOT SOUND OR THAT THE
OPINION IS OUTWEIGHED BY OTHER EVIDENCE, YOU MAY DISREGARD THE
OPINION ENTIRELY.
8
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
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1.8
USE OF DEPOSITIONS9
DURING THE TRIAL OF THIS CASE CERTAIN TESTIMONY HAS BEEN GIVEN,
PRESENTED TO YOU BY WAY OF A DEPOSITION, CONSISTING OF SWORN
RECORDED ANSWERS TO QUESTIONS ASKED OF THE WITNESS IN ADVANCE OF
THE TRIAL BY ONE OR MORE OF THE ATTORNEYS FOR THE PARTIES IN THIS
CASE. THE TESTIMONY OF A WITNESS WHO, FOR SOME REASON, CANNOT BE
PRESENT TO TESTIFY FROM THE WITNESS STAND MAY BE PRESENTED TO YOU,
AS IT WAS DONE HERE, UNDER OATH. SUCH TESTIMONY, LADIES AND
GENTLEMEN, IS ENTITLED TO THE SAME CONSIDERATION AND IS TO BE JUDGED
AS TO CREDIBILITY, AND WEIGHED, AND OTHERWISE CONSIDERED BY YOU, THE
JURY, INSOFAR AS POSSIBLE, IN THE SAME WAY AS IF THE WITNESS HAD BEEN
PRESENT AND HAD TESTIFIED FROM THE WITNESS STAND.
9
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
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IMPEACHMENT10
1.9
A WITNESS MAY BE DISCREDITED OR IMPEACHED BY CONTRADICTORY
EVIDENCE, OR BY EVIDENCE THAT AT SOME OTHER TIME THE WITNESS HAD
SAID OR DONE SOMETHING, OR HAS FAILED TO SAY OR DO SOMETHING WHICH
IS INCONSISTENT WITH THE WITNESS'S TESTIMONY HERE IN COURT, HIS
PRESENT TESTIMONY. IF YOU BELIEVE ANY WITNESS HAS BEEN IMPEACHED
AND, THUS, DISCREDITED, IT IS YOUR EXCLUSIVE DECISION TO GIVE THE
TESTIMONY OF THAT WITNESS SUCH CREDIBILITY AS YOU THINK IT DESERVES.
IF A WITNESS IS SHOWN KNOWINGLY TO HAVE TESTIFIED FALSELY TO
ANY MATERIAL MATTER, YOU HAVE A RIGHT TO DISTRUST SUCH WITNESS'S
TESTIMONY IN OTHER PARTICULARS AND YOU MAY REJECT ALL THE
TESTIMONY OF THAT WITNESS OR GIVE IT SUCH CREDIBILITY AS YOU THINK IT
DESERVES.
10
Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
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1.10
EFFECT OF PRIOR INCONSISTENT STATEMENTS OF CONDUCT11
IN DETERMINING THE WEIGHT TO GIVE TO THE TESTIMONY OF A WITNESS,
YOU SHOULD ASK YOURSELF WHETHER THERE WAS EVIDENCE TENDING TO
PROVE THAT THE WITNESS TESTIFIED FALSELY ABOUT SOME IMPORTANT FACT,
OR, WHETHER THERE WAS EVIDENCE THAT AT SOME OTHER TIME THE WITNESS
SAID OR DID SOMETHING, OR FAILED TO SAY OR DO SOMETHING THAT WAS
DIFFERENT FROM THE TESTIMONY HE GAVE AT THE TRIAL.
11
Fifth Circuit Model Jury Instructions (2006).
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1.11
CONTENTIONS OF THE PARTIES
I WILL NOW SUMMARIZE THE CONTENTIONS OF THE PARTIES BEFORE I
PROVIDE YOU INSTRUCTIONS ON THE LAW TO APPLY DURING YOUR
DELIBERATIONS. PLAINTIFF I/P ENGINE. INC. CONTENDS THAT DEFENDANTS
GOOGLE, INC., AOL, INC., IAC SEARCH & MEDIA, INC., GANNETT CO., INC., AND
TARGET CORP. INFRINGE CLAIMS 10, 14, 15, 25, 27 AND 28 OF U.S. PATENT NO.
6,314,420, WHICH HAS BEEN REFERRED TO AS “THE ‘420 PATENT,” AND CLAIMS 1,
5, 6, 21, 22, 26, 28 AND 38 OF U.S. PATENT NO. 6,775,664, WHICH HAS BEEN
REFERRED TO AS “THE ’664 PATENT.” SPECIFICALLY, I/P ENGINE CONTENDS
THAT GOOGLE’S ADWORDS DIRECTLY INFRINGES THE ASSERTED CLAIMS, AND
THAT AOL, INC., IAC SEARCH & MEDIA, GANNETT, AND TARGET INFRINGE
THROUGH THEIR USE OF GOOGLE’S ADWORDS SYSTEM. I/P ENGINE HAS THE
BURDEN OF PROVING THAT DEFENDANTS INFRINGE ANY OF THESE CLAIMS BY A
PREPONDERANCE OF THE EVIDENCE. THAT MEANS THAT I/P ENGINE MUST
SHOW THAT IT IS MORE LIKELY THAN NOT THAT GOOGLE’S ADWORDS
INFRINGES THE CLAIMS.
DEFENDANTS DENY THAT THEY INFRINGE ANY CLAIMS OF THE ‘420
PATENT OR THE ‘664 PATENT. DEFENDANTS ALSO CONTEND THAT THE
ASSERTED CLAIMS OF THE ‘420 PATENT AND THE ‘664 PATENT ARE INVALID.
INVALIDITY IS A DEFENSE TO PATENT INFRINGEMENT. EVEN THOUGH THE
UNITED STATES PATENT AND TRADEMARK OFFICE HAS ALLOWED THE CLAIMS
OF THE ‘420 PATENT AND THE ‘664 PATENT, YOU, THE JURY, ARE RESPONSIBLE
FOR DECIDING WHETHER THE CLAIMS OF THE PATENT ARE VALID.
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DEFENDANTS BEAR THE BURDEN OF PROVING INVALIDITY BY CLEAR AND
CONVINCING EVIDENCE.
YOUR JOB IS TO DECIDE WHETHER OR NOT THE ASSERTED CLAIMS OF THE
‘420 PATENT OR THE ‘664 PATENT HAVE BEEN INFRINGED AND WHETHER OR NOT
THOSE CLAIMS ARE INVALID. IF YOU DECIDE THAT ANY CLAIM OF THE ‘420
PATENT OR THE ‘664 PATENT HAS BEEN INFRINGED AND ALSO THAT AN
INFRINGED CLAIM IS NOT INVALID, THEN YOU WILL THEN NEED TO DECIDE
MONEY DAMAGES TO BE AWARDED TO I/P ENGINE.
I/P ENGINE HAS THE BURDEN OF PROVING THAT IT IS ENTITLED TO THE
DAMAGES IT SEEKS BY A PREPONDERANCE OF THE EVIDENCE.
I WILL NOW GIVE YOU INSTRUCTIONS AND DEFINITIONS TO HELP YOU IN
ANSWERING THE QUESTIONS TO FOLLOW.
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1.12
THE ROLE OF THE CLAIMS OF A PATENT12
BEFORE YOU CAN DECIDE MANY OF THE ISSUES IN THIS CASE, YOU WILL
NEED TO UNDERSTAND THE ROLE OF PATENT “CLAIMS.” THE PATENT CLAIMS
ARE THE NUMBERED SENTENCES AT THE END OF EACH PATENT. THE CLAIMS
ARE IMPORTANT BECAUSE IT IS THE WORDS OF THE CLAIMS THAT DEFINE WHAT
A PATENT COVERS. THE FIGURES AND TEXT IN THE REST OF THE PATENT
PROVIDE A DESCRIPTION AND/OR EXAMPLES OF THE INVENTION AND PROVIDE
A CONTEXT FOR THE CLAIMS, BUT IT IS THE CLAIMS THAT DEFINE THE BREADTH
OF THE PATENT’S COVERAGE. EACH CLAIM IS EFFECTIVELY TREATED AS IF IT
WERE A SEPARATE PATENT, AND EACH CLAIM MAY COVER MORE OR LESS THAN
ANOTHER CLAIM. THEREFORE, WHAT A PATENT COVERS DEPENDS, IN TURN, ON
WHAT EACH OF ITS CLAIMS COVERS.
YOU WILL FIRST NEED TO UNDERSTAND WHAT EACH CLAIM COVERS IN
ORDER TO DECIDE WHETHER OR NOT THERE IS INFRINGEMENT OF THE CLAIM
AND TO DECIDE WHETHER OR NOT THE CLAIM IS INVALID. THE LAW SAYS THAT
IT IS MY ROLE TO DEFINE THE TERMS OF THE CLAIMS AND IT IS YOUR ROLE TO
APPLY MY DEFINITIONS TO THE ISSUES THAT YOU ARE ASKED TO DECIDE IN
THIS CASE. THEREFORE, AS I EXPLAINED TO YOU AT THE START OF THE CASE, I
HAVE DETERMINED THE MEANING OF THE CLAIMS AND I WILL PROVIDE TO YOU
MY DEFINITIONS OF CERTAIN CLAIM TERMS. YOU MUST ACCEPT MY
DEFINITIONS OF THESE WORDS IN THE CLAIMS AS BEING CORRECT. IT IS YOUR
12
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
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JOB TO TAKE THESE DEFINITIONS AND APPLY THEM TO THE ISSUES THAT YOU
ARE DECIDING, INCLUDING THE ISSUES OF INFRINGEMENT AND VALIDITY.
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1.13
HOW A CLAIM DEFINES WHAT IT COVERS13
I WILL NOW EXPLAIN HOW A CLAIM DEFINES WHAT IT COVERS.
A CLAIM SETS FORTH, IN WORDS, A SET OF REQUIREMENTS. EACH CLAIM
SETS FORTH ITS REQUIREMENTS IN A SINGLE SENTENCE. IF A DEVICE OR A
METHOD SATISFIES EACH OF THESE REQUIREMENTS, THEN IT IS COVERED BY
THE CLAIM.
THERE CAN BE SEVERAL CLAIMS IN A PATENT. EACH CLAIM MAY BE
NARROWER OR BROADER THAN ANOTHER CLAIM BY SETTING FORTH MORE OR
FEWER REQUIREMENTS. THE COVERAGE OF A PATENT IS ASSESSED CLAIM-BYCLAIM. IN PATENT LAW, THE REQUIREMENTS OF A CLAIM ARE OFTEN
REFERRED TO AS “CLAIM ELEMENTS” OR “CLAIM LIMITATIONS.” WHEN A THING
(SUCH AS A PRODUCT OR A PROCESS) MEETS ALL OF THE REQUIREMENTS OF A
CLAIM, THE CLAIM IS SAID TO “COVER” THAT THING, AND THAT THING IS SAID
TO “FALL” WITHIN THE SCOPE OF THAT CLAIM. IN OTHER WORDS, A CLAIM
COVERS A PRODUCT OR PROCESS WHERE EACH OF THE CLAIM ELEMENTS OR
LIMITATIONS IS PRESENT IN THAT PRODUCT OR PROCESS.
SOMETIMES THE WORDS IN A PATENT CLAIM ARE DIFFICULT TO
UNDERSTAND, AND THEREFORE IT IS DIFFICULT TO UNDERSTAND WHAT
REQUIREMENTS THESE WORDS IMPOSE. IT IS MY JOB TO EXPLAIN TO YOU THE
MEANING OF THE WORDS IN THE CLAIMS AND THE REQUIREMENTS THESE
WORDS IMPOSE.
13
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
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AS I JUST INSTRUCTED YOU, THERE ARE CERTAIN SPECIFIC TERMS THAT I
HAVE DEFINED AND YOU ARE TO APPLY THE DEFINITIONS THAT I PROVIDE TO
YOU.
BY UNDERSTANDING THE MEANING OF THE WORDS IN A CLAIM AND BY
UNDERSTANDING THAT THE WORDS IN A CLAIM SET FORTH THE REQUIREMENTS
THAT A PRODUCT OR PROCESS MUST MEET IN ORDER TO BE COVERED BY THAT
CLAIM, YOU WILL BE ABLE TO UNDERSTAND THE SCOPE OF COVERAGE FOR
EACH CLAIM. ONCE YOU UNDERSTAND WHAT EACH CLAIM COVERS, THEN YOU
ARE PREPARED TO DECIDE THE ISSUES THAT YOU WILL BE ASKED TO DECIDE,
SUCH AS INFRINGEMENT AND INVALIDITY.
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1.14
INDEPENDENT AND DEPENDENT CLAIMS14
THIS CASE INVOLVES TWO TYPES OF PATENT CLAIMS: INDEPENDENT
CLAIMS AND DEPENDENT CLAIMS.
AN “INDEPENDENT CLAIM” SETS FORTH ALL OF THE REQUIREMENTS THAT
MUST BE MET IN ORDER TO BE COVERED BY THAT CLAIM. THUS, IT IS NOT
NECESSARY TO LOOK AT ANY OTHER CLAIM TO DETERMINE WHAT AN
INDEPENDENT CLAIM COVERS. IN THIS CASE, CLAIMS 10 AND 25 OF THE ‘420
PATENT ARE EACH INDEPENDENT CLAIMS, AND CLAIMS 1 AND 26 OF THE ‘664
PATENT ARE EACH INDEPENDENT CLAIMS.
CLAIMS 14, 15, 27, AND 28 OF THE “420 PATENT ARE EACH DEPENDENT
CLAIMS. CLAIMS 5, 6, 21, 22, 28, AND 38 OF THE ‘664 PATENT ARE EACH
DEPENDENT CLAIMS. A DEPENDENT CLAIM DOES NOT ITSELF RECITE ALL OF
THE REQUIREMENTS OF THE CLAIM BUT REFERS TO ANOTHER CLAIM FOR SOME
OF ITS REQUIREMENTS. IN THIS WAY, THE CLAIM “DEPENDS” ON ANOTHER
CLAIM. A DEPENDENT CLAIM INCORPORATES ALL OF THE REQUIREMENTS OF
THE CLAIM(S) TO WHICH IT REFERS. THE DEPENDENT CLAIM THEN ADDS ITS
OWN ADDITIONAL REQUIREMENTS. TO DETERMINE WHAT A DEPENDENT CLAIM
COVERS, IT IS NECESSARY TO LOOK AT BOTH THE DEPENDENT CLAIM AND ANY
OTHER CLAIM(S) TO WHICH IT REFERS. A PRODUCT THAT MEETS ALL OF THE
REQUIREMENTS OF BOTH THE DEPENDENT CLAIM AND THE CLAIM(S) TO WHICH
IT REFERS IS COVERED BY THAT DEPENDENT CLAIM. A DEPENDENT CLAIM
INCORPORATES ALL OF THE REQUIREMENTS OF THE INDEPENDENT CLAIM(S) TO
14
Patent Jury Instructions prepared by the Federal Circuit Bar Association; Active Video
Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).
01980.51928/4989241.4
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WHICH IT REFERS AND ALL OF THE REQUIREMENTS OF ANY DEPENDENT
CLAIM(S) TO WHICH IT REFERS. IF AN INDEPENDENT CLAIM IS NOT INFRINGED,
ITS DEPENDENT CLAIMS CANNOT BE INFRINGED.
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1.15
CLAIM INTERPRETATION15
I WILL NOW EXPLAIN TO YOU THE MEANING OF SOME OF THE WORDS OF
THE CLAIMS IN THIS CASE. IN DOING SO, I WILL EXPLAIN SOME OF THE
REQUIREMENTS OF THE CLAIMS. AS I HAVE PREVIOUSLY INSTRUCTED YOU,
YOU MUST ACCEPT MY DEFINITION OF THESE WORDS IN THE CLAIMS AS
CORRECT. FOR ANY WORDS IN THE CLAIM FOR WHICH I HAVE NOT PROVIDED
YOU WITH A DEFINITION, YOU SHOULD APPLY THEIR COMMON MEANING. YOU
SHOULD NOT TAKE MY DEFINITION OF THE LANGUAGE OF THE CLAIMS AS AN
INDICATION THAT I HAVE A VIEW REGARDING HOW YOU SHOULD DECIDE THE
ISSUES THAT YOU ARE BEING ASKED TO DECIDE, SUCH AS INFRINGEMENT AND
INVALIDITY. THESE ISSUES ARE YOURS TO DECIDE.
I WILL NOW INSTRUCT YOU HOW THOSE WORDS ARE TO BE CONSTRUED
AND UNDERSTOOD WHEN DECIDING THE ISSUES OF INFRINGEMENT AND
VALIDITY. YOU HAVE BEEN PROVIDED WITH WRITTEN COPIES OF THE ‘420
PATENT AND THE “664 PATENT, AND YOU MAY USE THEM DURING YOUR
DELIBERATIONS.
"COLLABORATIVE FEEDBACK DATA" MEANS "DATA FROM SYSTEM USERS
WITH SIMILAR INTERESTS OR NEEDS REGARDING WHAT INFORMONS SUCH
USERS FOUND TO BE RELEVANT."
“SCANNING A NETWORK” MEANS “LOOKING FOR OR EXAMINING ITEMS IN
A NETWORK.”
15
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
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“DEMAND SEARCH” MEANS “A SINGLE SEARCH ENGINE QUERY
PERFORMED UPON A USER REQUEST.”
“INFORMON” MEANS “INFORMATION ENTITY OF POTENTIAL OR ACTUAL
INTEREST TO THE [INDIVIDUAL/FIRST] USER.”
“USER” MEANS “AN INDIVIDUAL IN COMMUNICATION WITH THE
NETWORK.” (FOR THE ‘420 CLAIMS).
“USER” MEANS “AN INDIVIDUAL IN COMMUNICATION WITH A NETWORK.”
(FOR THE ‘664 CLAIMS).
“RELEVANCE TO THE QUERY” MEANS “HOW WELL AN INFORMON
SATISFIES THE INDIVIDUAL USER’S INFORMATION NEED IN THE QUERY.”
“QUERY” MEANS “REQUEST FOR SEARCH RESULTS.”
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1.16
CLAIM STEP ORDER
THE STEP [A] OF CLAIM 25 OF THE ‘420 PATENT MUST BE PERFORMED
BEFORE STEP [B]. IN ORDER FOR YOU TO FIND THAT CLAIM 25 OF THE ‘420
PATENT IS INFRINGED, YOU MUST FIRST FIND THAT GOOGLE ADWORDS
PERFORMS STEP [A] BEFORE STEP [B].
STEPS [A] AND [B] OF CLAIM 26 OF THE ‘664 PATENT MUST BE PERFORMED
BEFORE STEP [C]. IN ORDER FOR YOU TO FIND THAT CLAIM 26 OF THE ‘664
PATENT IS INFRINGED, YOU MUST FIRST FIND THAT GOOGLE ADWORDS
PERFORMS STEPS [A] AND [B] BEFORE STEP [C].
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2.
PATENT INFRINGEMENT
2.1
DIRECT INFRINGEMENT – GENERALLY
I WILL NOW INSTRUCT YOU ON THE SPECIFIC RULES YOU MUST FOLLOW
TO DETERMINE WHETHER I/P ENGINE HAS PROVEN BY A PREPONDERANCE OF
THE EVIDENCE THAT DEFENDANTS HAVE INFRINGED THE ‘420 PATENT OR THE
‘664 PATENT. INFRINGEMENT IS ASSESSED ON A CLAIM-BY-CLAIM BASIS.
THEREFORE, THERE MAY BE INFRINGEMENT AS TO ONE CLAIM BUT NO
INFRINGEMENT AS TO ANOTHER.
IN THIS CASE, I/P ENGINE HAS ALLEGED THAT DEFENDANTS DIRECTLY
INFRINGE CLAIMS 10, 14, 15, 25, 27 OR 28 OF THE ‘420 PATENT AND CLAIMS 1, 5, 6,
21, 22, 26, 28 OR 38 OF THE ‘664 PATENT. IN ADDITION, I/P ENGINE HAS ALLEGED
THAT THIRD PARTIES DIRECTLY INFRINGE THE ‘420 PATENT AND THE ‘664
PATENT, AND DEFENDANTS ARE LIABLE FOR ACTIVELY INDUCING OR
CONTRIBUTING TO THAT DIRECT INFRINGEMENT BY THOSE THIRD PARTIES.
01980.51928/4989241.4
26
2.2
DIRECT INFRINGEMENT – LITERAL INFRINGEMENT16
YOU MUST DECIDE WHETHER GOOGLE HAS MADE, USED, SOLD, OR
OFFERED FOR SALE WITHIN THE UNITED STATES, OR IMPORTED INTO THE
UNITED STATES, A PRODUCT COVERED BY CLAIMS 10, 14, 15, 25, 27 OR 28 OF THE
‘420 PATENT OR CLAIMS 1, 5, 6, 21, 22, 26, 28 OR 38 OF THE ‘664 PATENT. I/P ENGINE
CONTENDS THAT GOOGLE’S ADWORDS DIRECTLY INFRINGES CLAIMS 10, 14, 15,
25, 27 AND 28 OF THE ‘420 PATENT AND CLAIMS 1, 5, 6, 21, 22, 26, 28 AND 38 OF THE
‘664 PATENT. YOU MUST COMPARE THE ADWORDS SYSTEM WITH EACH AND
EVERY ONE OF THE REQUIREMENTS OF A CLAIM TO DETERMINE WHETHER ALL
OF THE REQUIREMENTS OF THAT CLAIM ARE MET.
YOU MUST DETERMINE, SEPARATELY FOR EACH ASSERTED CLAIM,
WHETHER OR NOT THERE IS INFRINGEMENT. THERE IS ONE EXCEPTION TO THIS
RULE. IF YOU FIND THAT A CLAIM ON WHICH OTHER CLAIMS DEPEND IS NOT
INFRINGED, THERE CANNOT BE INFRINGEMENT OF ANY DEPENDENT CLAIM
THAT REFERS DIRECTLY OR INDIRECTLY TO THAT INDEPENDENT CLAIM. ON
THE OTHER HAND, IF YOU FIND THAT AN INDEPENDENT CLAIM HAS BEEN
INFRINGED, YOU MUST STILL DECIDE, SEPARATELY, WHETHER THE PRODUCT
MEETS ADDITIONAL REQUIREMENTS OF ANY CLAIMS THAT DEPEND FROM THE
INDEPENDENT CLAIM, THUS, WHETHER THOSE CLAIMS HAVE ALSO BEEN
INFRINGED. A DEPENDENT CLAIM INCLUDES ALL THE REQUIREMENTS OF ANY
OF THE CLAIMS TO WHICH IT REFERS PLUS ADDITIONAL REQUIREMENTS OF ITS
OWN.
16
Adapted from Patent Jury Instructions prepared by the Federal Circuit Bar
Association.
01980.51928/4989241.4
27
TO PROVE LITERAL INFRINGEMENT, I/P ENGINE MUST PROVE THAT IT IS
MORE LIKELY THAN NOT THAT GOOGLE’S ADWORDS INCLUDES EVERY
REQUIREMENT IN THE PATENT CLAIM. YOU MUST COMPARE THE ADWORDS
SYSTEM WITH EACH AND EVERY ONE OF THE REQUIREMENTS OF A CLAIM TO
DETERMINE WHETHER ALL OF THE REQUIREMENTS OF THAT CLAIM ARE MET. IF
GOOGLE’S ADWORDS SYSTEM FAILS TO INCLUDE EVEN ONE REQUIREMENT
RECITED IN THE PATENT CLAIM, THE SYSTEM DOES NOT INFRINGE THAT CLAIM.
01980.51928/4989241.4
28
2.3
INDIRECT INFRINGEMENT – ACTIVE INDUCEMENT17
I/P ENGINE ALLEGES THAT DEFENDANTS ARE LIABLE FOR INFRINGEMENT
BY ACTIVELY INDUCING THIRD PARTIES TO DIRECTLY INFRINGE THE ‘420
PATENT AND THE ‘664 PATENT. AS WITH DIRECT INFRINGEMENT, YOU MUST
DETERMINE WHETHER THERE HAS BEEN ACTIVE INDUCEMENT ON A CLAIM-BYCLAIM BASIS.
DEFENDANTS ARE LIABLE FOR ACTIVE INDUCEMENT OF A CLAIM ONLY IF
I/P ENGINE PROVES BY A PREPONDERANCE OF THE EVIDENCE THAT:
(1) THE ACTS ARE ACTUALLY CARRIED OUT BY THIRD PARTIES AND
DIRECTLY INFRINGE THAT CLAIM;
(2) DEFENDANTS TOOK ACTION DURING THE TIME THE ‘420 PATENT AND
‘664 PATENT WERE IN FORCE INTENDING TO CAUSE THE INFRINGING ACTS BY
THIRD PARTIES; AND
(3) DEFENDANTS WERE AWARE OF THE ‘420 PATENT AND ‘664 PATENT AND
KNEW THAT THE ACTS, IF TAKEN, WOULD CONSTITUTE INFRINGEMENT OF THAT
PATENT.
IN ORDER TO ESTABLISH ACTIVE INDUCEMENT OF INFRINGEMENT, IT IS
NOT SUFFICIENT THAT THIRD PARTIES THEMSELVES DIRECTLY INFRINGE THE
CLAIM. NOR IS IT SUFFICIENT THAT DEFENDANTS WERE AWARE OF THE ACT(S)
BY THE THIRD PARTIES THAT ALLEGEDLY CONSTITUTE THE DIRECT
INFRINGEMENT. RATHER, YOU MUST FIND THAT DEFENDANTS SPECIFICALLY
INTENDED THIRD PARTIES TO INFRINGE THE ‘420 PATENT AND THE ‘664 PATENT.
17
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
29
01980.51928/4989241.4
30
2.4
INFRINGEMENT LIMITED TO ACTIVITIES WITHIN THE UNITED
STATES18
AN ACCUSED METHOD INFRINGES IF IT IS USED IN THE UNITED STATES. A
ACCUSED METHOD IS USED IN THE UNITED STATES ONLY IF EVERY STEP OF THE
ACCUSED METHOD IS PERFORMED WITHIN THE UNITED STATES. I/P ENGINE
MUST PROVE THAT IT IS MORE PROBABLE THAN NOT THAT EVERY STEP OF THE
ADWORDS METHOD OCCURS WITHIN THE UNITED STATES IN ORDER FOR THE
USE OF THE METHOD TO INFRINGE.
18
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005); see also Uniloc USA,
Inc. v. Microsoft Corp., 632 F. Supp. 2d 147, 156-57 (D.R.I. 2009).
01980.51928/4989241.4
31
3.
INVALIDITY
INVALIDITY – GENERALLY19
3.1
PATENT INVALIDITY IS A DEFENSE TO PATENT INFRINGEMENT. I WILL
NOW INSTRUCT YOU ON THE RULES YOU MUST FOLLOW IN DECIDING WHETHER
OR NOT DEFENDANTS HAVE PROVEN THAT CLAIMS 10, 14, 15, 25, 27 OR 28 OF THE
‘420 PATENT AND CLAIMS 1, 5, 6, 21, 22, 26, 28 OR 38 OF THE ‘664 PATENT ARE
INVALID. TO PROVE THAT ANY CLAIM OF A PATENT IS INVALID, DEFENDANTS
MUST PERSUADE YOU BY CLEAR AND CONVINCING EVIDENCE.
DURING THE COURSE OF THIS TRIAL, DEFENDANTS HAVE PRESENTED YOU
WITH A NUMBER OF PRIOR ART REFERENCES. THE FACT THAT ANY PARTICULAR
REFERENCE WAS NOT BEFORE THE PTO EXAMINER DURING PROSECUTION OF
THE PATENT APPLICATION DOES NOT CHANGE DEFENDANTS’ BURDEN OF PROOF
OR THE PRESUMPTION THAT THE PATENT IS VALID. HOWEVER, IN MAKING
YOUR DECISION WHETHER DEFENDANTS HAVE MET THEIR BURDEN OF PROOF
BY CLEAR AND CONVINCING EVIDENCE AS TO A PARTICULAR PATENT CLAIM,
YOU MAY CONSIDER WHETHER YOU HAVE HEARD PRIOR ART REFERENCES
THAT ARE MATERIALLY NEW THAT THE PATENT OFFICE HAS NO OPPORTUNITY
TO EVALUATE.20
I WILL NOW INSTRUCT YOU ON THE INVALIDITY ISSUES YOU SHOULD
CONSIDER.
19
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
20
Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2012 U.S. Dist. LEXIS 688,
*10-12 (N.D. Cal. Jan. 4, 2012)
01980.51928/4989241.4
32
WRITTEN DESCRIPTION21
3.2
THE PATENT LAW CONTAINS CERTAIN REQUIREMENTS FOR THE PART OF
THE PATENT CALLED THE SPECIFICATION. DEFENDANTS CONTEND THAT
CLAIMS 10, 14, 15, 25, 27 OR 28 OF THE ‘420 PATENT ARE INVALID FOR FAILURE TO
PROVIDE AN ADEQUATE WRITTEN DESCRIPTION OF THE CLAIMED INVENTION IN
THE ‘420 PATENT SPECIFICATION, AND CLAIMS 1, 5, 6, 21, 22, 26, 28 OR 38 OF THE
‘664 PATENT ARE INVALID FOR FAILURE TO PROVIDE AN ADEQUATE WRITTEN
DESCRIPTION OF THE CLAIMED INVENTION IN THE ‘664 PATENT SPECIFICATION.
IN THE PATENT APPLICATION PROCESS, THE APPLICANT MAY KEEP THE
ORIGINALLY FILED CLAIMS, OR CHANGE THE CLAIMS BETWEEN THE TIME THE
PATENT APPLICATION IS FIRST FILED AND THE TIME A PATENT IS ISSUED. AN
APPLICANT MAY AMEND THE CLAIMS OR ADD NEW CLAIMS. THESE CHANGES
MAY NARROW OR BROADEN THE SCOPE OF THE CLAIMS. THE WRITTEN
DESCRIPTION REQUIREMENT ENSURES THAT THE ISSUED CLAIMS CORRESPOND
TO THE SCOPE OF THE WRITTEN DESCRIPTION THAT WAS PROVIDED IN THE
ORIGINAL APPLICATION.
IN DECIDING WHETHER THE PATENT SATISFIES THIS WRITTEN
DESCRIPTION REQUIREMENT, YOU MUST CONSIDER THE DESCRIPTION FROM
THE VIEWPOINT OF A PERSON HAVING ORDINARY SKILL IN THE FIELD OF
TECHNOLOGY OF THE PATENT WHEN THE APPLICATION WAS FILED. THE
WRITTEN DESCRIPTION REQUIREMENT IS SATISFIED IF A PERSON HAVING
ORDINARY SKILL READING THE ORIGINAL PATENT APPLICATION WOULD HAVE
21
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
33
RECOGNIZED THAT IT DESCRIBES THE FULL SCOPE OF THE CLAIMED INVENTION
AS IT IS FINALLY CLAIMED IN THE ISSUED PATENT AND THAT THE INVENTOR
ACTUALLY POSSESSED THAT FULL SCOPE BY THE FILING DATE OF THE
ORIGINAL APPLICATION.
THE WRITTEN DESCRIPTION REQUIREMENT MAY BE SATISFIED BY ANY
COMBINATION OF THE WORDS, STRUCTURES, FIGURES, DIAGRAMS, FORMULAS,
ETC., CONTAINED IN THE PATENT APPLICATION. THE FULL SCOPE OF A CLAIM
OR ANY PARTICULAR REQUIREMENT IN A CLAIM NEED NOT BE EXPRESSLY
DISCLOSED IN THE ORIGINAL PATENT APPLICATION IF A PERSON HAVING
ORDINARY SKILL IN THE FIELD OF TECHNOLOGY OF THE PATENT AT THE TIME
OF FILING WOULD HAVE UNDERSTOOD THAT THE FULL SCOPE OR MISSING
REQUIREMENT IS IN THE WRITTEN DESCRIPTION IN THE PATENT APPLICATION.
THUS, THE DESCRIPTION MUST SHOW THAT THE ALLEGED INVENTOR
ACTUALLY INVENTED THE CLAIMED INVENTION. BUT MERELY SHOWING
INVENTION IS NOT SUFFICIENT; THE ULTIMATE QUESTION IS WHETHER THE
SPECIFICATION DESCRIBES IN FULL, CLEAR, AND EXACT TERMS THE NATURE
AND EXTENT OF THE CLAIMED INVENTION.22
IF YOU FIND THAT ONE OR MORE OF THE CLAIMS CHALLENGED BY
DEFENDANTS LACKED AN ADEQUATE WRITTEN DESCRIPTION, YOU MUST FIND
EACH SUCH CLAIM INVALID.
22
Jury Instr. No. 5.6 in Fractus, S.A. v. Samsung Elecs. Co., No. 6:09-CV-203 (E.D. Tex.
May 23, 2011) (D.I. 997); 35 U.S.C. § 112, ¶¶ 1, 2; Schriber-Schroth Co. v. Cleveland Trust Co.,
305 U.S. 47 (1938); Permutit Co. v. Graver Corp., 284 U.S. 52 (1931); O’Reilly v. Morse, 56
U.S. (15 How.) 62 (1853); Evans v. Eaton, 20 U.S. 356, 435 (1822); Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).
01980.51928/4989241.4
34
01980.51928/4989241.4
35
PRIOR ART23
3.3
PRIOR ART MAY INCLUDE ITEMS THAT WERE PUBLICLY KNOWN OR THAT
HAVE BEEN USED OR OFFERED FOR SALE, PUBLICATIONS, OR PATENTS THAT
DISCLOSE THE CLAIMED INVENTION OR ELEMENTS OF THE CLAIMED
INVENTION. TO BE PRIOR ART, THE ITEM OR REFERENCE MUST HAVE BEEN
MADE, KNOWN, USED, PUBLISHED, OR PATENTED EITHER BEFORE THE
INVENTION WAS MADE OR MORE THAN ONE YEAR BEFORE THE FILING DATE OF
THE PATENT APPLICATION. HOWEVER, PRIOR ART DOES NOT INCLUDE A
PUBLICATION THAT DESCRIBES THE INVENTOR’S OWN WORK AND WAS
PUBLISHED LESS THAN ONE YEAR BEFORE THE DATE OF INVENTION.
FOR THE CLAIM TO BE INVALID BECAUSE IT IS NOT NEW, DEFENDANTS
MUST SHOW THAT ALL OF THE REQUIREMENTS OF THAT CLAIM WERE PRESENT
IN A SINGLE PREVIOUS DEVICE OR METHOD THAT WAS KNOWN OF, USED, OR
DESCRIBED IN A SINGLE PREVIOUS PRINTED PUBLICATION OR PATENT. WE
CALL THESE THINGS “ANTICIPATING PRIOR ART.” TO ANTICIPATE, THE PRIOR
ART DOES NOT HAVE TO USE THE SAME WORDS AS THE CLAIM, BUT ALL OF THE
REQUIREMENTS OF THE CLAIM MUST HAVE BEEN DISCLOSED, EITHER STATED
EXPRESSLY OR IMPLIED TO A PERSON HAVING ORDINARY SKILL IN THE ART IN
THE TECHNOLOGY OF THE INVENTION, SO THAT LOOKING AT THAT ONE
REFERENCE, THAT PERSON COULD MAKE AND USE THE CLAIMED INVENTION.
23
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
36
3.4
ANTICIPATION – PUBLICLY USED, KNOWN OR PREVIOUSLY
PUBLISHED24
THE PATENT LAWS OF THE UNITED STATES REQUIRE THAT AN INVENTION
MUST BE NEW FOR A PERSON TO BE ENTITLED TO A PATENT. IN GENERAL,
INVENTIONS ARE NEW WHEN THE PRODUCT HAS NOT BEEN MADE, USED, OR
DISCLOSED BEFORE. DEFENDANTS CONTEND THAT CLAIMS 10, 14, 15, 25, 27 OR
28 OF THE ‘420 PATENT AND CLAIMS 1, 5, 6, 21, 22, 26, 28 OR 38 OF THE ‘664 PATENT
ARE INVALID BECAUSE THEY WERE NOT NEW OR LACKED NOVELTY. FOR A
CLAIM TO BE INVALID BECAUSE IT IS NOT NEW, DEFENDANTS MUST SHOW THAT
ALL OF ITS REQUIREMENTS WERE PRESENT IN A SINGLE DEVICE OR METHOD
THAT PREDATES THE CLAIMED INVENTION, OR MUST HAVE BEEN DESCRIBED IN
A SINGLE PREVIOUS PUBLICATION OR PATENT THAT PREDATES THE CLAIMED
INVENTION. IN PATENT LAW, SUCH PREVIOUS DEVICE, METHOD, PUBLICATION
OR PATENT IS CALLED A “PRIOR ART REFERENCE.” IF A PATENT CLAIM IS NOT
NEW, WE SAY IT IS “ANTICIPATED” BY A PRIOR ART REFERENCE.
IN ORDER FOR SOMEONE TO BE ENTITLED TO A PATENT, THE INVENTION
MUST ACTUALLY BE “NEW” AND THE INVENTOR MUST NOT HAVE LOST HER OR
HIS RIGHTS BY DELAYING THE FILING OF AN APPLICATION CLAIMING THE
INVENTION. IN GENERAL, INVENTIONS ARE NEW WHEN THE IDENTICAL
PRODUCT OR PROCESS HAS NOT BEEN MADE, USED, OR DISCLOSED BEFORE.
ANTICIPATION MUST BE DETERMINED ON A CLAIM-BY-CLAIM BASIS.
24
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
37
HERE IS A LIST OF WAYS THAT DEFENDANTS CAN SHOW THAT A PATENT
CLAIM WAS NOT NEW OR THAT THE PATENTEE LOST THE RIGHT TO PATENT THE
CLAIMS:
(1) AN INVENTION IS NOT NEW IF IT WAS KNOWN TO OR USED BY OTHERS
IN THE UNITED STATES BEFORE THE INVENTORS’ INVENTION. AN INVENTION IS
KNOWN WHEN THE INFORMATION ABOUT IT WAS REASONABLY ACCESSIBLE TO
THE PUBLIC ON THAT DATE.
(2) AN INVENTION IS NOT NEW IF IT WAS ALREADY PATENTED OR
DESCRIBED IN A PRINTED PUBLICATION, ANYWHERE IN THE WORLD BEFORE
THE INVENTORS’ INVENTION.
(3) I/P ENGINE HAS LOST ITS RIGHTS IF THE CLAIMED INVENTION WAS
ALREADY PATENTED OR DESCRIBED IN A PRINTED PUBLICATION, ANYWHERE IN
THE WORLD BY THE INVENTORS OR ANYONE ELSE, MORE THAN A YEAR BEFORE
DECEMBER 3, 1998, WHICH IS THE EFFECTIVE FILING DATE OF THE APPLICATION
FOR THE ‘420 PATENT AND THE ‘664 PATENT. AN INVENTION WAS PATENTED BY
ANOTHER IF THE OTHER PATENT DESCRIBES THE SAME INVENTION CLAIMED BY
I/P ENGINE TO A PERSON HAVING ORDINARY SKILL IN THE TECHNOLOGY.
(4) I/P ENGINE HAS LOST ITS RIGHTS IF THE CLAIMED INVENTION WAS
PUBLICLY USED, SOLD, OR OFFERED FOR SALE IN THE UNITED STATES MORE
THAN ONE YEAR BEFORE DECEMBER 3, 1998, WHICH IS THE EFFECTIVE FILING
DATE OF THE APPLICATION FOR THE ‘420 PATENT. AN INVENTION WAS
PUBLICLY USED WHEN IT WAS EITHER ACCESSIBLE TO THE PUBLIC OR
COMMERCIALLY EXPLOITED. AN INVENTION WAS SOLD OR OFFERED FOR SALE
01980.51928/4989241.4
38
WHEN IT WAS OFFERED COMMERCIALLY AND WHAT WAS OFFERED WAS READY
TO BE PATENTED, I.E., A DESCRIPTION TO ONE HAVING ORDINARY SKILL IN THE
FIELD OF THE TECHNOLOGY COULD HAVE MADE AND USED THE CLAIMED
INVENTION, EVEN IF IT WAS NOT YET REDUCED TO PRACTICE.
(5) AN INVENTION IS NOT NEW IF IT WAS DESCRIBED IN A PUBLISHED
PATENT APPLICATION FILED BY ANOTHER IN THE UNITED STATES BEFORE THE
EFFECTIVE FILING DATE OF THE PATENT, IN THIS CASE DECEMBER 3, 1998.
(8) AN INVENTION IS NOT NEW IF THE CLAIMED INVENTION WAS
DESCRIBED IN A PATENT GRANTED ON AN APPLICATION FOR PATENT BY
ANOTHER FILED IN THE UNITED STATES AND THE APPLICATION WAS FILED
BEFORE THE EFFECTIVE FILING DATE OF THE PATENT, IN THIS CASE DECEMBER
3, 1998.
IF A PATENT CLAIM IS NOT NEW, AS EXPLAINED ABOVE, YOU MUST FIND
THAT CLAIM TO BE INVALID.
01980.51928/4989241.4
39
OBVIOUSNESS25
3.5
EVEN THOUGH AN INVENTION MAY NOT HAVE BEEN IDENTICALLY
DISCLOSED OR DESCRIBED BEFORE IT WAS MADE BY AN INVENTOR, IN ORDER
TO BE PATENTABLE, THE INVENTION MUST ALSO NOT HAVE BEEN OBVIOUS TO
A PERSON OF ORDINARY SKILL IN THE FIELD OF TECHNOLOGY OF THE PATENT
AT THE TIME THE INVENTION WAS MADE.
DEFENDANTS CONTEND THAT CLAIMS 10, 14, 15, 25, 27 OR 28 OF THE ‘420
PATENT AND CLAIMS 1, 5, 6, 21, 22, 26, 28 OR 38 OF THE ‘664 PATENT ARE INVALID
BECAUSE THE INVENTION WAS OBVIOUS. DEFENDANTS MAY ESTABLISH THAT
A PATENT CLAIM IS INVALID BY SHOWING THAT THE CLAIMED INVENTION
WOULD HAVE BEEN OBVIOUS TO PERSONS HAVING ORDINARY SKILL IN THE
ART AT THE TIME THE INVENTION WAS MADE IN THE FIELD OF THE INVENTION.
IN DETERMINING WHETHER A CLAIMED INVENTION IS OBVIOUS, YOU
MUST CONSIDER THE LEVEL OF ORDINARY SKILL IN THE FIELD OF THE
INVENTION THAT SOMEONE WOULD HAVE HAD AT THE TIME THE CLAIMED
INVENTION WAS MADE, THE SCOPE AND CONTENT OF THE PRIOR ART, AND ANY
DIFFERENCES BETWEEN THE PRIOR ART AND THE CLAIMED INVENTION.
KEEP IN MIND THAT THE EXISTENCE OF EACH AND EVERY ELEMENT OF
THE CLAIMED INVENTION IN THE PRIOR ART DOES NOT NECESSARILY PROVE
OBVIOUSNESS. MOST, IF NOT ALL, INVENTIONS RELY ON BUILDING BLOCKS OF
PRIOR ART. IN CONSIDERING WHETHER A CLAIMED INVENTION IS OBVIOUS,
YOU MAY BUT ARE NOT REQUIRED TO FIND OBVIOUSNESS IF YOU FIND THAT AT
25
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
40
THE TIME OF THE CLAIMED INVENTION THERE WAS A REASON THAT WOULD
HAVE PROMPTED A PERSON HAVING ORDINARY SKILL IN THE FIELD OF THE
INVENTION TO COMBINE THE KNOWN ELEMENTS IN A WAY THE CLAIMED
INVENTION DOES, TAKING INTO ACCOUNT SUCH FACTORS AS (1) WHETHER THE
CLAIMED INVENTION WAS MERELY THE PREDICTABLE RESULT OF USING PRIOR
ART ELEMENTS ACCORDING TO THEIR KNOWN FUNCTION(S); (2) WHETHER THE
CLAIMED INVENTION PROVIDES AN OBVIOUS SOLUTION TO A KNOWN PROBLEM
IN THE RELEVANT FIELD; (3) WHETHER THE PRIOR ART TEACHES OR SUGGESTS
THE DESIRABILITY OF COMBINING ELEMENTS CLAIMED IN THE INVENTION; (4)
WHETHER THE PRIOR ART TEACHES AWAY FROM COMBINING ELEMENTS IN THE
CLAIMED INVENTION; (5) WHETHER IT WOULD HAVE BEEN OBVIOUS TO TRY THE
COMBINATIONS OF ELEMENTS, SUCH AS WHEN THERE IS A DESIGN NEED OR
MARKET PRESSURE TO SOLVE A PROBLEM AND THERE ARE A FINITE NUMBER
OF IDENTIFIED, PREDICTABLE SOLUTIONS; AND (6) WHETHER THE CHANGE
RESULTED MORE FROM DESIGN INCENTIVES OR OTHER MARKET FORCES. TO
FIND THAT A COMBINATION OF ART RENDERS THE INVENTION OBVIOUS, YOU
MUST FIND THAT THE PRIOR ART PROVIDED A REASONABLE EXPECTATION OF
SUCCESS.
IN DETERMINING WHETHER THE CLAIMED INVENTION WAS OBVIOUS,
CONSIDER EACH CLAIM SEPARATELY. DO NOT USE HINDSIGHT, I.E., CONSIDER
ONLY WHAT WAS KNOWN AT THE TIME OF THE INVENTION.
IN MAKING THESE ASSESSMENTS, YOU SHOULD TAKE INTO ACCOUNT ANY
OBJECTIVE EVIDENCE (SOMETIMES CALLED “SECONDARY CONSIDERATIONS”)
01980.51928/4989241.4
41
THAT MAY HAVE EXISTED AT THE TIME OF THE INVENTION AND AFTERWARDS
THAT MAY SHED LIGHT ON THE OBVIOUSNESS OR NOT OF THE CLAIMED
INVENTION, SUCH AS:
A. WHETHER THE INVENTION WAS COMMERCIALLY SUCCESSFUL AS A
RESULT OF THE MERITS OF THE CLAIMED INVENTION (RATHER THAN THE
RESULT OF DESIGN NEEDS OR MARKET-PRESSURE);
B. WHETHER THE INVENTION SATISFIED A LONG-FELT NEED;
C. WHETHER OTHERS HAD TRIED AND FAILED TO MAKE THE INVENTION;
D. WHETHER OTHERS INVENTED THE INVENTION AT ROUGHLY THE SAME
TIME;
E. WHETHER OTHERS COPIED THE INVENTION;
F. WHETHER THERE WERE CHANGES OR RELATED TECHNOLOGIES OR
MARKET NEEDS CONTEMPORANEOUS WITH THE INVENTION;
G. WHETHER THE INVENTION ACHIEVED UNEXPECTED RESULTS;
H. WHETHER OTHERS IN THE FIELD PRAISED THE INVENTION;
I. WHETHER PERSONS HAVING ORDINARY SKILL IN THE ART OF THE
INVENTION EXPRESSED SURPRISE OR DISBELIEF REGARDING THE INVENTION;
J. WHETHER OTHERS SOUGHT OR OBTAINED RIGHTS TO THE PATENT
FROM THE PATENT HOLDER; AND
K. WHETHER THE INVENTOR PROCEEDED CONTRARY TO ACCEPTED
WISDOM IN THE FIELD.
IF YOU FIND THAT A CLAIMED INVENTION WAS OBVIOUS AS EXPLAINED
ABOVE, YOU MUST FIND THAT CLAIM INVALID.
01980.51928/4989241.4
42
01980.51928/4989241.4
43
4.
DAMAGES
4.1
DAMAGES – GENERALLY26
IF YOU FIND THAT DEFENDANTS INFRINGED ANY VALID CLAIM OF THE
‘420 PATENT OR THE ‘664 PATENT, YOU MUST THEN CONSIDER WHAT AMOUNT
OF DAMAGES TO AWARD TO I/P ENGINE. I WILL NOW INSTRUCT YOU ABOUT THE
MEASURE OF DAMAGES. BY INSTRUCTING YOU ON DAMAGES, I AM NOT
SUGGESTING WHICH PARTY SHOULD WIN THIS CASE, ON ANY ISSUE. THESE
INSTRUCTIONS ARE PROVIDED TO GUIDE YOU ON THE CALCULATION OF
DAMAGES IN THE EVENT YOU FIND INFRINGEMENT OF A VALID PATENT CLAIM
AND THUS MUST ADDRESS THE DAMAGES ISSUE.
THE DAMAGES YOU AWARD MUST BE ADEQUATE TO COMPENSATE I/P
ENGINE FOR THE INFRINGEMENT. THEY ARE NOT MEANT TO PUNISH AN
INFRINGER. YOUR DAMAGES AWARD, IF YOU REACH THIS ISSUE, SHOULD PUT I/P
ENGINE IN APPROXIMATELY THE SAME FINANCIAL POSITION THAT IT WOULD
HAVE BEEN IN HAD THE INFRINGEMENT NOT OCCURRED. IN THIS CASE, I/P
ENGINE SEEKS A REASONABLE ROYALTY. A REASONABLE ROYALTY IS DEFINED
AS THE MONEY AMOUNT THE PATENT HOLDER AND THE INFRINGER WOULD
HAVE AGREED UPON AS A FEE FOR USE OF THE INVENTION AT THE TIME PRIOR
TO WHEN INFRINGEMENT BEGAN.
26
Patent Jury Instructions prepared by the Federal Circuit Bar Association; Final Jury
Instructions in Shelbyzyme LLC v. Genzyme Corp. (Dist. Del., Civil Action No. 09-768-GMS)
(D.I. 183) (July 13, 2012); and Final Jury Instructions in CNH America LLC and Blue Leaf I.P.,
Inc. v. Kinze Mfg., Inc. (Dist. Del., Civil Action No. 08-945-GMS) (D.I. 301) (February 10,
2011).
01980.51928/4989241.4
44
I/P ENGINE HAS THE BURDEN TO ESTABLISH THE AMOUNT OF ITS
DAMAGES BY A PREPONDERANCE OF THE EVIDENCE. IN OTHER WORDS, YOU
SHOULD AWARD ONLY THOSE DAMAGES THAT I/P ENGINE ESTABLISHES THAT IT
MORE LIKELY THAN NOT SUFFERED.
01980.51928/4989241.4
45
4.2
DAMAGES – LIMITED TO ACTIVITIES WITHIN THE UNITED
STATES27
IF YOU CHOOSE TO AWARD I/P ENGINE DAMAGES, YOU MUST REMEMBER
THAT I/P ENGINE IS ENTITLED ONLY TO DAMAGES DUE TO INFRINGEMENT
OCCURRING WITHIN THE UNITED STATES. IN DETERMINING WHETHER
INFRINGEMENT OCCURS WITHIN THE UNITED STATES, YOU MUST DETERMINE
WHETHER EACH AND EVERY STEP OF THE CLAIMED METHOD IS PERFORMED
WITHIN THIS COUNTRY. I/P ENGINE MUST PROVE THAT IT IS MORE PROBABLE
THAN NOT THAT THE DAMAGES IT SEEKS ARE DUE TO INFRINGEMENT
OCCURRING WITHIN THE UNITED STATES.
27
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005).
01980.51928/4989241.4
46
4.3
DAMAGES – LIMITED TO INFRINGING ACTIVITIES
IF YOU FIND INFRINGEMENT OF A VALID CLAIM OF THE ‘420 PATENT OR
THE ‘664 PATENT, YOU MUST ALSO REMEMBER THAT I/P ENGINE IS ENTITLED
ONLY TO DAMAGES FOR ACTUAL INFRINGEMENT, AND NOT FOR ACTIVITIES
PRIOR TO THE FIRST INFRINGEMENT. I/P ENGINE CONTENDS THAT YOU SHOULD
ASSESS DAMAGES STARTING ON SEPTEMBER 15, 2005. DEFENDANTS CONTEND
THAT YOU SHOULD ASSESS DAMAGES ONLY BEGINNING IN NOVEMBER 2010
BECAUSE GOOGLE DID NOT BEGIN USING THE ALLEGEDLY INFRINGING
FEATURES OF THE SMARTADS SYSTEM UNTIL THIS TIME.
01980.51928/4989241.4
47
REASONABLE ROYALTY - DEFINITION28
4.4
A ROYALTY IS A PAYMENT MADE TO A PATENT HOLDER IN EXCHANGE
FOR RIGHTS TO MAKE, USE OR SELL THE CLAIMED INVENTION. A REASONABLE
ROYALTY IS THE AMOUNT OF ROYALTY PAYMENT THAT A PATENT HOLDER
AND THE INFRINGER WOULD HAVE AGREED TO IN A HYPOTHETICAL
NEGOTIATION TAKING PLACE AT A TIME PRIOR TO WHEN THE INFRINGEMENT
FIRST BEGAN.
IF YOU CHOOSE TO AWARD I/P ENGINE DAMAGES, YOU MUST DECIDE
WHAT REASONABLE ROYALTY WOULD HAVE RESULTED FROM A
HYPOTHETICAL NEGOTIATION BETWEEN LYCOS AND GOOGLE TAKING PLACE
JUST BEFORE THE TIME WHEN THE INFRINGEMENT FIRST BEGAN.
IN CONSIDERING THIS HYPOTHETICAL NEGOTIATION, YOU SHOULD FOCUS
ON WHAT THE EXPECTATIONS OF THE PATENT HOLDER AND THE INFRINGER
WOULD HAVE BEEN HAD THEY ENTERED INTO AN AGREEMENT AT THAT TIME,
AND HAD THEY ACTED REASONABLY IN THEIR NEGOTIATIONS. IN
DETERMINING THIS, YOU MUST ASSUME THAT BOTH PARTIES BELIEVED THE
PATENT WAS VALID AND INFRINGED AND THE PATENT HOLDER AND INFRINGER
WERE WILLING TO ENTER INTO AN AGREEMENT. THE REASONABLE ROYALTY
YOU DETERMINE MUST BE A ROYALTY THAT WOULD HAVE RESULTED FROM
THE HYPOTHETICAL NEGOTIATION, AND NOT SIMPLY A ROYALTY EITHER
PARTY WOULD HAVE PREFERRED. EVIDENCE OF THINGS THAT HAPPENED
AFTER THE INFRINGEMENT FIRST BEGAN CAN BE CONSIDERED IN EVALUATING
28
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
48
THE REASONABLE ROYALTY ONLY TO THE EXTENT THAT THE EVIDENCE AIDS
IN ASSESSING WHAT ROYALTY WOULD HAVE RESULTED FROM A
HYPOTHETICAL NEGOTIATION. ALTHOUGH EVIDENCE OF THE ACTUAL PROFITS
AN ALLEGED INFRINGER MADE MAY BE USED TO DETERMINE THE ANTICIPATED
PROFITS AT THE TIME OF THE HYPOTHETICAL NEGOTIATION, THE ROYALTY
MAY NOT BE LIMITED OR INCREASED BASED ON THE ACTUAL PROFITS THE
ALLEGED INFRINGER MADE.
01980.51928/4989241.4
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REASONABLE ROYALTY – RELEVANT FACTORS29
4.5
IN DETERMINING THE ROYALTY THAT WOULD HAVE RESULTED FROM
THE HYPOTHETICAL NEGOTIATION, YOU MUST FOCUS ON THE PORTION OF A
PRODUCT’S VALUE THAT IS ATTRIBUTABLE TO THE PATENTED TECHNOLOGY,
AS OPPOSED TO THE PORTION OF THE PRODUCT’S VALUE THAT IS
ATTRIBUTABLE TO OTHER FEATURES OR TECHNOLOGIES.30 IN DOING SO, YOU
MAY CONSIDER REAL WORLD FACTS KNOWN AND AVAILABLE TO THE PARTIES
AT THE TIME THE INFRINGEMENT BEGAN, INCLUDING THE FOLLOWING, TO THE
EXTENT THEY ARE HELPFUL TO YOU:
(1) THE ROYALTIES RECEIVED BY THE PATENTEE FOR THE LICENSING OF
THE PATENT-IN-SUIT, PROVING OR TENDING TO PROVE AN ESTABLISHED
ROYALTY.
(2) THE RATES PAID BY THE LICENSEE FOR THE USE OF OTHER PATENTS
COMPARABLE TO THE PATENT-IN-SUIT.
(3) THE NATURE AND SCOPE OF THE LICENSE, AS EXCLUSIVE OR
NONEXCLUSIVE, OR AS RESTRICTED OR NONRESTRICTED IN TERMS OF
TERRITORY OR WITH RESPECT TO WHOM THE MANUFACTURED PRODUCT MAY
BE SOLD.
(4) THE LICENSOR’S ESTABLISHED POLICY AND MARKETING PROGRAM TO
MAINTAIN HIS OR HER PATENT MONOPOLY BY NOT LICENSING OTHERS TO USE
29
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
30
Garretson v. Clark, 111 U.S. 120, 121 (1884); Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301, 1337-38 (Fed. Cir. 2009); Imonex Services, Inc. v. W.H. Munzprufer Dietmar
Trenner GmbH, 408 F.3d 1374, 1380 (Fed. Cir. 2005); Rite-Hite Corp. v. Kelley Co., 56 F.3d
1538, 1549-50 (Fed. Cir. 1995) (en banc); Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d
150, 185 (D.R.I. 2009).
01980.51928/4989241.4
50
THE INVENTION OR BY GRANTING LICENSES UNDER SPECIAL CONDITIONS
DESIGNED TO PRESERVE THAT MONOPOLY.
(5) THE COMMERCIAL RELATIONSHIP BETWEEN THE LICENSOR AND
LICENSEE, SUCH AS WHETHER THEY ARE COMPETITORS IN THE SAME
TERRITORY IN THE SAME LINE OF BUSINESS, OR WHETHER THEY ARE INVENTOR
AND PROMOTER.
(6) THE EFFECT OF SELLING THE PATENTED SPECIALTY IN PROMOTING
SALES OF OTHER PRODUCTS OF THE LICENSEE, THE EXISTING VALUE OF THE
INVENTION TO THE LICENSOR AS A GENERATOR OF SALES OF HIS
NONPATENTED ITEMS, AND THE EXTENT OF SUCH DERIVATIVE OR CONVOYED
SALES.
(7) THE DURATION OF THE PATENT AND THE TERM OF THE LICENSE.
(8) THE ESTABLISHED PROFITABILITY OF THE PRODUCT MADE UNDER THE
PATENTS, ITS COMMERCIAL SUCCESS, AND ITS CURRENT POPULARITY.
(9) THE UTILITY AND ADVANTAGES OF THE PATENTED PROPERTY OVER
THE OLD MODES OR DEVICES, IF ANY, THAT HAD BEEN USED FOR WORKING OUT
SIMILAR RESULTS.
(10) THE NATURE OF THE PATENTED INVENTION, THE CHARACTER OF THE
COMMERCIAL EMBODIMENT OF IT AS OWNED AND PRODUCED BY THE
LICENSOR, AND THE BENEFITS TO THOSE WHO HAVE USED THE INVENTION.
(11) THE EXTENT TO WHICH THE INFRINGER HAS MADE USE OF THE
INVENTION AND ANY EVIDENCE PROBATIVE OF THE VALUE OF THAT USE.
01980.51928/4989241.4
51
(12) THE PORTION OF THE PROFIT OR OF THE SELLING PRICE THAT MAY BE
CUSTOMARY IN THE PARTICULAR BUSINESS OR IN COMPARABLE BUSINESSES
TO ALLOW FOR THE USE OF THE INVENTION OR ANALOGOUS INVENTIONS.
(13) THE PORTION OF THE REALIZABLE PROFITS THAT SHOULD BE
CREDITED TO THE INVENTION AS DISTINGUISHED FROM NONPATENTED
ELEMENTS, THE MANUFACTURING PROCESS, BUSINESS RISKS, OR SIGNIFICANT
FEATURES OR IMPROVEMENTS ADDED BY THE INFRINGER.
(14) THE OPINION AND TESTIMONY OF QUALIFIED EXPERTS.
(15) THE AMOUNT THAT A LICENSOR (SUCH AS THE PATENTEE) AND A
LICENSEE (SUCH AS THE INFRINGER) WOULD HAVE AGREED UPON (AT THE TIME
THE INFRINGEMENT BEGAN) IF BOTH HAD BEEN REASONABLY AND
VOLUNTARILY TRYING TO REACH AN AGREEMENT; THAT IS, THE AMOUNT
WHICH A PRUDENT LICENSEE—WHO DESIRED, AS A BUSINESS PROPOSITION, TO
OBTAIN A LICENSE TO MANUFACTURE AND SELL A PARTICULAR ARTICLE
EMBODYING THE PATENTED INVENTION—WOULD HAVE BEEN WILLING TO PAY
AS A ROYALTY AND YET BE ABLE TO MAKE A REASONABLE PROFIT AND WHICH
AMOUNT WOULD HAVE BEEN ACCEPTABLE BY A PRUDENT PATENTEE WHO WAS
WILLING TO GRANT A LICENSE.
NO ONE FACTOR IS DISPOSITIVE AND YOU CAN AND SHOULD CONSIDER
THE EVIDENCE THAT HAS BEEN PRESENTED TO YOU IN THIS CASE ON EACH OF
THESE FACTORS. YOU MAY ALSO CONSIDER ANY OTHER FACTORS WHICH IN
YOUR MIND WOULD HAVE INCREASED OR DECREASED THE ROYALTY THE
INFRINGER WOULD HAVE BEEN WILLING TO PAY AND THE PATENT HOLDER
01980.51928/4989241.4
52
WOULD HAVE BEEN WILLING TO ACCEPT, ACTING AS NORMALLY PRUDENT
BUSINESS PEOPLE. THE FINAL FACTOR ESTABLISHES THE FRAMEWORK WHICH
YOU SHOULD USE IN DETERMINING A REASONABLE ROYALTY, THAT IS, THE
PAYMENT THAT WOULD HAVE RESULTED FROM A NEGOTIATION BETWEEN THE
PATENT HOLDER AND THE INFRINGER TAKING PLACE AT A TIME PRIOR TO
WHEN THE INFRINGEMENT BEGAN.
01980.51928/4989241.4
53
4.6
ENTIRE MARKET VALUE31
REASONABLE ROYALTY DAMAGES MUST BE BASED ON “THE USE MADE
OF THE INVENTION BY THE INFRINGER.” THEREFORE, WHEN THE PATENTED
INVENTION IS JUST ONE FEATURE OF A SYSTEM WITH MULTIPLE FEATURES OR
FUNCTIONALITIES, A PATENT HOLDER MUST APPORTION THE DAMAGES
BETWEEN THE PATENTED FEATURE OF THE ACCUSED SYSTEM AND THE OTHER
NON-INFRINGING FEATURES, AND THE ROYALTY SHOULD NOT BE BASED ON
THE VALUE OF THE ENTIRE SYSTEM. IN ADDITION, YOU MUST CONSIDER
WHETHER THOSE FEATURES DERIVE VALUE ONLY FROM THEIR USE OF THE
PATENTED INVENTION, OR WHETHER THEY WOULD STILL HAVE VALUE IF THEY
DID NOT USE THAT INVENTION. YOU MAY AWARD DAMAGES BASED ONLY ON
THE PORTION OF AN INFRINGING FEATURE’S VALUE THAT IS ATTRIBUTABLE TO
ITS USE OF THE PATENTED INVENTION.32
THE “ENTIRE MARKET VALUE RULE” IS AN EXCEPTION TO THIS GENERAL
RULE. UNDER THE ENTIRE MARKET VALUE RULE, A PATENT OWNER MAY
RECOVER DAMAGES BASED ON THE VALUE OF AN ENTIRE SYSTEM CONTAINING
SEVERAL FEATURES, EVEN THOUGH ONLY ONE FEATURE IS PATENTED, ONLY IF
THE PATENT OWNER CAN SHOW THAT THE PATENTED FEATURE DRIVES THE
DEMAND FOR THE ENTIRE SYSTEM. IT IS NOT ENOUGH TO SHOW THAT THE
31
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011); Laser
Dynamics, Inc. v. Quanta Computer, Inc. et al., Case No. 2011-1140 at 22-23 (Fed. Cir. Aug. 30,
2012).
32
Garretson v. Clark, 111 U.S. 120, 121 (1884); Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301, 1337-38 (Fed. Cir. 2009); Imonex Services, Inc. v. W.H. Munzprufer Dietmar
Trenner GmbH, 408 F.3d 1374, 1380 (Fed. Cir. 2005); Rite-Hite Corp. v. Kelley Co., 56 F.3d
1538, 1549-50 (Fed. Cir. 1995) (en banc); Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d
150, 185 (D.R.I. 2009).
01980.51928/4989241.4
54
PATENTED FEATURE IS VIEWED AS VALUABLE, IMPORTANT, OR EVEN
ESSENTIAL TO THE USE OF THE ENTIRE SYSTEM. INSTEAD, A PATENT OWNER
MUST SHOW THAT THE PATENTED FEATURE IS WHAT MOTIVATES CUSTOMERS
TO USE THE ENTIRE SYSTEM IN THE FIRST PLACE. ONLY IF YOU FIND THAT I/P
ENGINE HAS SHOWN BY A PREPONDERANCE OF THE EVIDENCE THAT THE
ENTIRE MARKET VALUE RULE IS MET, MAY YOU AWARD DAMAGES AS A
PERCENTAGE OF THE REVENUES OR PROFITS ATTRIBUTABLE TO THE ENTIRE
SMARTADS SYSTEM.
01980.51928/4989241.4
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4.7
OTHER LICENSES OR AGREEMENTS MUST BE COMPARABLE33
IF YOU CHOSE TO AWARD DAMAGES, YOU MUST LIMIT THE AMOUNT OF
DAMAGES TO WHAT THE EVIDENCE SHOWS IS FAIR COMPENSATION FOR THE
ECONOMIC HARM CAUSED BY INFRINGEMENT OF THE CLAIMED INVENTION.
EVIDENCE OF DAMAGES, INCLUDING OTHER LICENSES OR AGREEMENTS, MUST
BE FAIRLY COMPARABLE TO A HYPOTHETICAL LICENSE FOR I/P ENGINE’S
PATENTS. I/P ENGINE HAS THE BURDEN TO PROVE THAT OTHER LICENSES OR
AGREEMENTS ARE SUFFICIENTLY COMPARABLE TO SUPPORT AN AWARD OF
DAMAGES.
33
ResQNet.com, Inc. v. Lansa, 594 F.3d 860, 872 (Fed. Cir. 2010); Lucent Techs., Inc. v.
Gateway, 580 F.3d 1301, 1327-28 (Fed.Cir.2009).
01980.51928/4989241.4
56
4.8
APPORTIONMENT OF DAMAGES BASED ON THE CONTRIBUTION
OF THE PATENTED TECHNOLOGY TO THE INFRINGING
PRODUCTS
YOU HAVE HEARD TESTIMONY FROM THE DAMAGES EXPERTS
REGARDING THE AMOUNT OF BENEFIT THE DEFENDANTS REALIZED FROM
USING THE TECHNOLOGY OF THE PATENT. KEEP IN MIND THAT THE
REASONABLE ROYALTY ANALYSIS MUST TAKE INTO ACCOUNT THE
CONTRIBUTION OF THE PATENTED TECHNOLOGY AS COMPARED TO THE
CONTRIBUTIONS OF NON-PATENTED TECHNOLOGY OR CONTRIBUTIONS OF
PATENTS HELD BY THE DEFENDANTS OR OTHERS.34
THE PATENTEE HAS THE BURDEN TO ESTABLISH THIS RELATIVE
CONTRIBUTION.35 IF YOU FIND THAT I/P ENGINE’S DAMAGES EXPERT HAS NOT
PROPERLY CONSIDERED THE VALUE OF THE PATENT TO THE INFRINGING
PRODUCTS AS COMPARED TO OTHER TECHNOLOGY, HIS TESTIMONY IS NOT
RELIABLE AND YOU MUST NOT CONSIDER IT.
34
Cornell Univ. v. Hewlett-Packard Co., 2008 U.S. Dist. LEXIS 41848, at *6 (S.D.N.Y. May
27, 2008); Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002).
35
Garretson v. Clark, 111 U.S. 120, 121 (1884); Suffolk Co. v. Hayden, 70 U.S. 315, 319-20
(1865); Mowry v. Whitney, 81 U.S. 6230, 651 (1871).
01980.51928/4989241.4
57
LACHES36
4.9
DEFENDANTS CONTEND THAT I/P ENGINE IS NOT ENTITLED TO RECOVER
DAMAGES FOR ACTS THAT OCCURRED BEFORE IT FILED A LAWSUIT BECAUSE:
(1) I/P ENGINE DELAYED FILING THE LAWSUIT FOR AN UNREASONABLY LONG
AND INEXCUSABLE PERIOD OF TIME, AND (2) DEFENDANTS HAVE BEEN OR WILL
BE PREJUDICED IN A SIGNIFICANT WAY DUE TO I/P ENGINE’S DELAY IN FILING
THE LAWSUIT. THIS IS REFERRED TO AS LACHES. DEFENDANTS MUST PROVE
DELAY AND PREJUDICE BY A PREPONDERANCE OF THE EVIDENCE.
WHETHER I/P ENGINE’S DELAY WAS UNREASONABLY LONG AND
UNJUSTIFIED IS A QUESTION THAT MUST BE ANSWERED BY CONSIDERING THE
FACTS AND CIRCUMSTANCES AS THEY EXISTED DURING THE PERIOD OF DELAY.
THERE IS NO MINIMUM AMOUNT OF DELAY REQUIRED TO ESTABLISH LACHES.
IF SUIT WAS DELAYED FOR SIX YEARS, A REBUTTABLE PRESUMPTION ARISES
THAT THE DELAY WAS UNREASONABLE AND UNJUSTIFIED, AND THAT
MATERIAL PREJUDICE RESULTED. THIS PRESUMPTION SHIFTS THE BURDEN OF
PROOF TO I/P ENGINE TO COME FORWARD WITH EVIDENCE TO PROVE THAT THE
DELAY WAS JUSTIFIED OR THAT MATERIAL PREJUDICE DID NOT RESULT, AND IF
I/P ENGINE PRESENTS SUCH EVIDENCE, THE BURDEN OF PROVING LACHES
REMAINS WITH DEFENDANTS. LACHES MAY BE FOUND FOR DELAYS OF LESS
THAN SIX YEARS IF THERE IS PROOF OF UNREASONABLY LONG AND
UNJUSTIFIABLE DELAY CAUSING MATERIAL PREJUDICE TO DEFENDANTS.
FACTS AND CIRCUMSTANCES THAT CAN JUSTIFY A LONG DELAY CAN INCLUDE:
36
Patent Jury Instructions prepared by the Federal Circuit Bar Association.
01980.51928/4989241.4
58
(1) BEING INVOLVED IN OTHER LITIGATION INVOLVING THE
ASSERTED PATENTS DURING THE PERIOD OF DELAY IF ADEQUATE
NOTICE OF THE OTHER LITIGATION WAS GIVEN TO THE
DEFENDANTS INFORMING THE DEFENDANTS OF I/P ENGINE’S
INTENTION TO ENFORCE ITS PATENT UPON COMPLETION OF THAT
PROCEEDING37;
(2) BEING INVOLVED IN NEGOTIATIONS WITH DEFENDANTS DURING
THE PERIOD OF DELAY;
(3) POVERTY OR ILLNESS DURING THE PERIOD OF DELAY;
(4) WARTIME CONDITIONS DURING THE PERIOD OF DELAY;
(5) BEING INVOLVED IN A DISPUTE ABOUT OWNERSHIP OF THE
PATENT DURING THE PERIOD OF DELAY; OR
(6) MINIMAL AMOUNTS OF ALLEGEDLY INFRINGING ACTIVITY BY
DEFENDANTS DURING THE PERIOD OF DELAY.
IF YOU FIND UNREASONABLE AND UNJUSTIFIED DELAY OCCURRED, TO FIND
LACHES, YOU MUST ALSO DETERMINE IF DEFENDANTS SUFFERED MATERIAL
PREJUDICE AS A RESULT OF THE DELAY. PREJUDICE TO DEFENDANTS CAN BE
EVIDENTIARY OR ECONOMIC. WHETHER DEFENDANTS SUFFERED EVIDENTIARY
PREJUDICE IS A QUESTION THAT MUST BE ANSWERED BY EVALUATING
WHETHER DELAY IN FILING THIS CASE RESULTED IN DEFENDANTS NOT BEING
37
Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 877 (Fed.
Cir. 1991) (“For other litigation to excuse a delay in bringing suit, there must be adequate notice
of the proceedings to the accused infringer. The notice must also inform the alleged infringer of
the patentee's intention to enforce its patent upon completion of that proceeding.”) (citations
omitted).
01980.51928/4989241.4
59
ABLE TO PRESENT A FULL AND FAIR DEFENSE ON THE MERITS TO I/P ENGINE’S
INFRINGEMENT CLAIM. NOT BEING ABLE TO PRESENT A FULL AND FAIR
DEFENSE ON THE MERITS TO AN INFRINGEMENT CLAIM CAN OCCUR DUE TO THE
LOSS OF IMPORTANT RECORDS, THE DEATH OR IMPAIRMENT OF AN IMPORTANT
WITNESS(ES), THE UNRELIABILITY OF MEMORIES ABOUT IMPORTANT EVENTS
BECAUSE THEY OCCURRED IN THE DISTANT PAST, OR OTHER SIMILAR TYPES OF
THINGS.
ECONOMIC PREJUDICE IS DETERMINED BY WHETHER OR NOT
DEFENDANTS CHANGED THEIR ECONOMIC POSITIONS IN A SIGNIFICANT WAY
DURING THE PERIOD OF DELAY RESULTING IN LOSSES BEYOND MERELY PAYING
FOR INFRINGEMENT (SUCH AS IF THAT DEFENDANT COULD HAVE SWITCHED TO
A NONINFRINGING PRODUCT IF SUED EARLIER), AND ALSO WHETHER
DEFENDANTS’ LOSSES AS A RESULT OF THAT CHANGE IN ECONOMIC POSITION
LIKELY WOULD HAVE BEEN AVOIDED IF I/P ENGINE HAD FILED THIS LAWSUIT
SOONER. IN ALL SCENARIOS THOUGH, THE ULTIMATE DETERMINATION OF
WHETHER LACHES SHOULD APPLY IN THIS CASE IS A QUESTION OF FAIRNESS,
GIVEN ALL THE FACTS AND CIRCUMSTANCES. THUS, YOU MAY FIND THAT
LACHES DOES NOT APPLY IF THERE IS NO EVIDENCE ESTABLISHING EACH OF
THE THREE ELEMENTS NOTED ABOVE (UNREASONABLE DELAY, LACK OF
EXCUSE OR JUSTIFICATION, AND SIGNIFICANT PREJUDICE). YOU MAY ALSO
FIND THAT EVEN THOUGH ALL OF THE ELEMENTS OF LACHES HAVE BEEN
PROVED, IT SHOULD NOT, IN FAIRNESS, APPLY, GIVEN ALL THE FACTS AND
CIRCUMSTANCES IN THIS CASE.
01980.51928/4989241.4
60
01980.51928/4989241.4
61
5.
FINAL INSTRUCTIONS – DELIBERATION
NOTHING THAT I MAY HAVE SAID OR DONE DURING THE COURSE OF THIS
TRIAL IS INTENDED TO INDICATE ANY VIEW OF MINE AS TO WHICH PARTY
SHOULD, OR SHOULD NOT, WIN THIS CASE. AS I INSTRUCTED YOU PREVIOUSLY,
THE JURY IS THE SOLE JUDGE OF THE CREDIBILITY OF THE TESTIMONY AND THE
WEIGHT TO BE GIVEN THE EVIDENCE. THESE INSTRUCTIONS ARE GIVEN TO YOU
AS A WHOLE, AND YOU ARE NOT TO SINGLE OUT ONE INSTRUCTION ALONE AS
STATING THE LAW, BUT MUST CONSIDER THE INSTRUCTIONS AS A WHOLE. YOU
HAVE HEARD ALL OF THE EVIDENCE IN THE CASE AND YOU HAVE HEARD THE
ARGUMENT OF COUNSEL. THE COURT HAS GIVEN YOU THE CHARGE IN THIS
CASE.
IN A FEW MOMENTS YOU WILL RETIRE TO THE JURY ROOM, SELECT ONE
OF YOUR MEMBERS TO ACT AS FOREPERSON, AND BEGIN PERFORMING THE
FUNCTION FOR WHICH YOU HAVE BEEN CHOSEN AND FOR WHICH YOU HAVE
BEEN EMPANELLED, IN ACCORDANCE WITH THE OATH YOU TOOK AS JURORS.
YOU WILL REMEMBER THAT AT THE BEGINNING OF THE TRIAL, THE COURT
ADMONISHED YOU NOT TO DISCUSS THE CASE WITH EACH OTHER UNTIL IT WAS
SUBMITTED TO YOU. NOW IS THE TIME FOR YOU TO BEGIN YOUR DISCUSSION,
AND YOU CERTAINLY MAY EXPRESS AN OPINION FROM THE EVIDENCE THAT
YOU HAVE HEARD AND USE ANY REASONABLE MEANS TO PERSUADE OTHER
MEMBERS OF THE JURY TO YOUR CONVICTIONS AND TO YOUR HONEST OPINION.
IN THE COURSE OF YOUR DELIBERATIONS, DO NOT HESITATE TO REEXAMINE
YOUR OWN VIEWS, AND CHANGE YOUR OPINION IF CONVINCED IT IS
ERRONEOUS. BUT DO NOT SURRENDER YOUR HONEST CONVICTION AS TO THE
01980.51928/4989241.4
62
WEIGHT OR EFFECT OF THE EVIDENCE, SOLELY BECAUSE OF THE OPINION OF
YOUR FELLOW JURORS, OR FOR THE MERE PURPOSE OF RETURNING A VERDICT.
YOU ARE TO REACH A VERDICT WHICH SPEAKS THE TRUTH, AND WHICH
DOES JUSTICE TO ALL PARTIES WITHOUT FAVOR, BIAS, OR PREJUDICE IN ANY
PARTICULAR WAY, EITHER FOR OR AGAINST ANY PARTY TO THIS LAWSUIT. THE
LAW DOES NOT PERMIT JURORS TO BE GOVERNED BY SYMPATHY OR
PREJUDICE. A CORPORATION AND ALL OTHER PERSONS, INCLUDING THE
PLAINTIFF AND DEFENDANTS IN THIS CASE, ARE EQUAL BEFORE THE LAW AND
MUST BE TREATED AS EQUALS IN A COURT OF JUSTICE.
THE VERDICT MUST REPRESENT THE CONSIDERED JUDGMENT OF EACH
JUROR. IN ORDER TO RETURN A VERDICT, IT IS NECESSARY THAT EACH JUROR
AGREE THERETO. YOUR VERDICT MUST BE UNANIMOUS. AS SOON AS YOU
HAVE REACHED A VERDICT, YOU WILL LET THIS FACT BE KNOWN TO THE
OFFICER WHO WILL BE WAITING UPON YOU AND HE WILL REPORT TO THE
COURT.
YOUR VERDICT WILL BE IN THE FORM OF QUESTIONS FOR YOU TO
ANSWER. YOU WILL TAKE THESE QUESTIONS TO THE JURY ROOM, AND WHEN
YOU HAVE REACHED A UNANIMOUS AGREEMENT AS TO YOUR VERDICT, YOU
WILL HAVE YOUR FOREPERSON FILL IN, DATE, AND SIGN THE FORM AND THEN
ADVISE THE COURT SECURITY OFFICER THAT YOU HAVE REACHED A VERDICT.
DURING YOUR DELIBERATIONS, YOU MAY HAVE ANY OF THE EXHIBITS WHICH
HAVE BEEN OFFERED INTO EVIDENCE, AND THE COURT WILL SEND THEM TO
YOU UPON WRITTEN REQUEST.
01980.51928/4989241.4
63
IF YOU DESIRE FURTHER INSTRUCTIONS, YOUR FOREPERSON MAY MAKE
THIS KNOWN IN WRITING, AND THE COURT WILL TRY TO COMPLY WITH YOUR
WISHES. ALL COMMUNICATIONS WITH THE COURT MUST BE IN WRITING, BUT
AT NO TIME SHOULD YOU INDICATE TO THE COURT OR TO ANYONE ELSE HOW
THE JURY IS DIVIDED IN ANSWERING ANY PARTICULAR QUESTION.
ANY NOTES THAT YOU HAVE TAKEN DURING THIS TRIAL ARE ONLY AIDES
TO MEMORY. IF YOUR MEMORY SHOULD DIFFER FROM YOUR NOTES, THEN YOU
SHOULD RELY ON YOUR MEMORY AND NOT ON THE NOTES. THE NOTES ARE
NOT EVIDENCE. A JUROR WHO HAS NOT TAKEN NOTES SHOULD RELY ON HIS OR
HER INDEPENDENT RECOLLECTION OF THE EVIDENCE AND SHOULD NOT BE
UNDULY INFLUENCED BY THE NOTES OF OTHER JURORS. NOTES ARE NOT
ENTITLED TO ANY GREATER WEIGHT THAN THE RECOLLECTION OR IMPRESSION
OF EACH JUROR CONCERNING THE TESTIMONY.
I NOW HAND THE QUESTIONS TO THE COURT SECURITY OFFICER. YOU
WILL FOLLOW HIM TO THE JURY ROOM, SELECT ONE OF YOUR MEMBERS AS
FOREPERSON, AND BEGIN YOUR DELIBERATIONS.
01980.51928/4989241.4
64
DATED: October 9, 2012
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
senoona@kaufcan.com
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700
davidbilsker@quinnemanuel.com
davidperlson@quinnemanuel.com
Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and Gannett Co., Inc.
By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
senoona@kaufcan.com
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: (571) 203-2700
Facsimile: (202) 408-4400
01980.51928/4989241.4
65
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: (404) 653-6400
Facsimile: (415) 653-6444
Counsel for Defendant AOL Inc.
01980.51928/4989241.4
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CERTIFICATE OF SERVICE
I hereby certify that on October 9, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
sherwoodj@dicksteinshapiro.com
brothersk@dicksteinshapiro.com
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
dschultz@cwm-law.cm
wrsnow@cwm-law.com
sstancliff@cwm-law.com
Counsel for Plaintiff, I/P Engine, Inc.
Craig C. Reilly Esq.
Law Office of Craig C. Reilly
111 Oronoco Street
Alexandria, VA 22314
Telephone: (703) 549-5354
Facsimile: (703) 549-2604
craig.reilly@ccreillylaw.com
Craig T. Merritt
Christian & Barton, LLP
909 E. Main Street, Suite 1200
Richmond VA 23219-3095
Telephone: (804) 697-4128
Facsimile: (804) 697-6128
cmerritt@cblaw.com
01980.51928/4989241.4
67
Roderick G. Dorman (pro hac vice)
Jeanne Irving (pro hac vice)
Alan P. Block (pro hac vice)
Jeffrey Huang (pro hac vice)
McKool Smith Hennigan P.C.
865 South Figueroa Street, Suite 2900
Los Angeles, CA 90017
Telephone: (213) 694-1200
Facsimile: (213) 694-1234
rdorman@mckoolsmithhennigan.com
jirving@mckoolsmithhennigan.com
ablock@mckoolsmithhennigan.com
jhuang@mckoolsmithhennigan.com
Douglas A. Cawley (pro hac vice)
McKool Smith P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Telephone: (214) 978-4000
Facsimile: (214) 978-4044
dcawley@mckoolsmithhennigan.com
acurry@mckoolsmithhennigan.com
Counsel for Plaintiff Suffolk Technologies, LLC
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
senoona@kaufcan.com
11972055v1
01980.51928/4989241.4
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